talking about computers and design
by Ralph Grabowski

Dec 30, 2009

Judge agrees that orange rectangles are generic

Judge William Alsup also ruled on Autodesk's silly lawsuit against SolidWork's use of an orange-colored rectangle and the word "real."

In short, he found that Autodesk could not prove that an orange rectangle its trade dress. (Trade dress is the distinctive text, colors, and/or pictures on boxes and other containers in which products are sold.)

In long, Autodesk claimed primary and secondary trade dress on the orange rectangle and the word "real."

Primary is when the trade dress identifies the source of the product, or distinguishes it from other products -- like Tide's bright orange box and distinctive blue and white name.

Secondary is when the buying public associates the trade dress with the producer, rather than the product -- like Proctor & Gamble's use of the Tide color and font with its Tide to Go stain remover pen. (The examples are mine.)

The judge found that Autodesk failed to produce sufficient evidence that (1) the mark was distinctive and (2) that SolidWorks deliberately copied it. Instead, he found the opposite:

Autodesk had used a variety of colors, sizes, and aspect ratios of rectangles on its products; it did not consistently use a single instance of the rectangle.

Autodesk could show only two instances of using the orange rectangle with the word "real," both briefly in video clips; it did not use them repeatedly on one or more products and marketing campaigns.

Even if Autodesk had shown the judge that it used the trade dress repeatedly, the judge found previous case law that held that a rectangle is too simple a geometric shape to be considered trade dress.

The judge also found that the word "real" is generic to the CAD industry. "'Real' is a common place term in the CAD context. It refers to a user's ability to get a real-world visual image of a design, the whole point of CAD technology."

Autodesk's infrequent of use of the trade dress meant it could not win the secondary meaning.

SolidWorks did show the judge that they did not copy the dress from Autodesk: "[SolidWorks] found its design to be different from plaintiff's and thus decided to move forward with its design thereby potentially showing a good faith attempt to ensure its design was not identical to plaintiff's."

I am dismayed that Autodesk would throw money at lawyers and waste the court's time over this triviality. I get the feeling the judge is unimpressed also, writing "...plaintiff [Autodesk] can dredge up only two instances where the orange frame is used in combination with the real element." Dredge, indeed.

The judge also reprimanded Autodesk's lawyer:

At oral argument, [Autodesk's] counsel significantly overstated the record on supposed "copying." On appeal, please be more candid in presenting the record.

This was Autodesk's second run at wresting away orange rectangles from SolidWorks. The judge noticed that an earlier order found that Autodesk's claim was unclear, and that Autodesk then changed its claim against SolidWorks from "trade dress infringement" to "false designation of origin" but then provided no new facts.